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You say “prost”, I say “slàinte”, but when is whisky called Scotch?

Date: 27 September 2018

 

The term “Glen” certainly evokes Scotland, but does it make you think of Scotch Whisky?

 

“Scotch Whisky” can only be sold in the EU if it is made in Scotland. The product at issue in this case was a German whisky marketed in the EU under the brand “Glen Buchenbach”, a name made up of a pun derived from Berglen (the hometown of the Waldhorn distillery that makes the whisky) and from the river Buchenbach which runs through the valley where Berglen is located. The distiller Mr Michael Klotz included the statements “Deutsches Erzeugnis” (German product) and “Hergestellt in den Berglen” (produced in the Berglen) on the label.

 

The Scotch Whisky Association (SWA), an organisation that promotes, protects and represents the interests of the whisky industry in Scotland and around the world, brought an action before the Regional Court of Hamburg. It argued that because the Gaelic word “Glen” was very widely used in Scotland - particularly as an element of the trade mark in the names of Scottish whiskies - it evoked an association with Scotland and Scotch Whisky in the minds of the relevant public, despite the information on the label which specified that the product was of German origin.

 

After considering the arguments, the Regional Court of Hamburg found that the word “glen” was Gaelic for “a narrow valley” and that 31/116 Scottish distilleries benefiting from EU protection were named after the glen they were located in. However, there were also whiskies produced outside of Scotland which had “glen” as part of their name, such as the whiskies “Glen Breton” from Canada, “Glendalough” from Ireland and “Glen Els” from Germany.

 

As the success (or not) of the claim depended on the interpretation of the Regulation on the definition, description and presentation of spirit drinks (110/2008/ EC), the Regional Court of Hamburg decided to stay the proceedings and refer questions to the CJEU (Scotch Whisky Association v Klotz; C-44/17).

 

The CJEU ruled as follows:

 

  • An “indirect commercial use” of a registered geographical indication required that the designation in question must be used in a form that was either identical or phonetically/visually similar to the protected designation.
  • The decisive criterion for infringement was whether the name of the product in question could directly trigger an image in the mind of the average European consumer of the product for which the indication was protected.
  • It was not sufficient if the disputed name only evoked in the minds of the relevant public some vague association with the protected geographical indication or related geographical area.
  • No account should be taken of the surrounding context, not even where the disputed element was accompanied by an indication of the product’s true origin.

 

The decision means that the geographical indication “Scotch Whisky” could be infringed if the average European consumer thinks directly of “Scotch Whisky” when confronted with the German Whisky called “Glen Buchenbach”, which gives a broad scope of protection under the Regulation. Allowing the national court some wiggle-room in cases where the disputed element is not used prominently and is surrounded by information which gives a clear indication of the product’s origin would be within the spirit of Section 127 of the German Trade Mark Act, which provides that “Indications of geographical origin may not be used in the course of trade for goods or services which do not originate in the place, area, region or country […] provided that there is a risk of misleading as to the geographical origin in spite of the divergence or the additions”. There is also the question of whether the disputed designation is “Glen” or “Glen Buchenbach”, which will be another matter for the District Court of Hamburg to consider when applying the measures dispensed by the CJEU.

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